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ROSETTA STONE


Trough Google’s AdWords programme,


a


company may purchase a competitor’s trademark as a keyword so that when users conduct a search on Google.com using the competitor’s trademark as a search term, the purchaser’s advertisements will appear as ‘sponsored links’, above or beside the search results.


Te federal courts have been inconsistent in holding whether the purchase or sale of trademarks as keywords violates trademark law. However, the US Court of Appeal for the Fourth Circuit has clarified some, but not all, of the murky waters created by previous litigations with its April 2012 appellate decision in Rosetta Stone v Google (Rosetta Stone II).


Background


At the district court level, Rosetta Stone Ltd v Google Inc (Rosetta Stone I), began when Rosetta Stone, a provider of language-education soſtware products, filed suit in the US District Court for the Eastern District of Virginia alleging that Google committed trademark infringement, unfair competition, and dilution in violation of both the Lanham Act and the law of Virginia when it sold advertisers the right to use Rosetta Stone’s trademarks as keywords for sponsored links.


Te Eastern District of Virginia granted summary judgment to Google, holding that “no reasonable trier of


fact could find that


Google’s practice of auctioning Rosetta Stone’s trademarks as keyword triggers to third party


www.worldipreview.com


advertisers for use in their sponsored link titles and text creates a likelihood of confusion as to the source or origin of Rosetta Stone’s goods”. Rosetta Stone appealed. Te Fourth Circuit affirmed the district court’s decision as to the vicarious infringement and unjust enrichment claims and vacated and remanded the district court’s order with respect to Rosetta Stone’s direct infringement, contributory infringement and dilution claims.


Use in commerce


In keyword advertising cases, a critical legal issue is whether use of a trademark as a keyword for sponsored links constitutes a use in commerce sufficient to impose infringement.


liability for trademark


Most courts have found that the purchase of trademarks as keywords to generate sponsored links does constitute


“use” of


mechanism of advertising, it is ‘use’ for Lanham Act purposes”. In addition, in Buying For Te Home v Humble Adobe, the district of New Jersey found “use in commerce” where the defendant bid on and purchased the plaintiff’s ‘Total Bedroom’ trademark from Google’s AdWords programme. Similarly, in Edina Realty v TeMLSonline.com, the district of Minnesota found that the purchase of search terms constituted use in commerce.


the mark in


commerce under the Lanham Act. For example, in Hearts on Fire v Blue Nile, the US District Court of Massachusetts held that the defendant Blue Nile’s purchase of the plaintiff’s ‘Hearts On Fire’ mark as a keyword to trigger the display of sponsored advertisements constituted a “use in commerce” under the Lanham Act.


Tis finding was consistent with an earlier decision from the district court of Massachusetts, Boston Duck Tours v Super Duck Tours that held “[b]ecause sponsored linking necessarily entails the ‘use’ of the plaintiff’s mark as part of a


Before the US Court of Appeals for the Second Circuit, the law has been in flux on the issue of whether use of a trademark in keyword advertising constitutes “use in commerce”. Most of the cases in the Second Circuit courts prior to 2008 found no “use in commerce” in somewhat analogous situations. However, in the more recent case of Rescuecom v Google, the Second Circuit held that Google’s offering of a competitor’s trademark for sale through its AdWords programme did constitute a “use in commerce”. It is important to note that the Second Circuit’s decision in Rescuecom merely allowed Rescuecom’s claims to survive Google’s motion to dismiss—there has been no actual finding of liability.


Unfortunately, in Rosetta Stone II, the Fourth Circuit did not address the issue of whether use of a trademark as a keyword constitutes a use in commerce, because Google did not argue that point.


Likelihood of confusion


Another central issue that has confronted the courts in keyword advertising cases is whether traditional


Trademarks Brands and the Internet Volume 1, Issue 2 37


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